NIPPON STEEL COATED SHEET CORPORATION

Patent Trials and Appeals Board

May 5, 2021

2021001918 (P.T.A.B. May. 5, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/766,639 04/06/2018 Toshiaki SAKAMOTO 2018-0441A 5368 513 7590 05/05/2021 WENDEROTH, LIND & PONACK, L.L.P. 1025 Connecticut Avenue, NW Suite 500 Washington, DC 20036 EXAMINER LA VILLA, MICHAEL EUGENE ART UNIT PAPER NUMBER 1784 NOTIFICATION DATE DELIVERY MODE 05/05/2021 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): eoa@wenderoth.com kmiller@wenderoth.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TOSHIAKI SAKAMOTO, YOICHI TOZAKI, HIROMASA NOMURA, TOMONARI HAMAMURA, and HIDEAKI NASU Appeal 2021-001918 Application 15/766,639 Technology Center 1700 Before TERRY J. OWENS, CATHERINE Q. TIMM, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-14. See Final Act. 5. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “NIPPON STEEL COATED SHEET CORPORATION.” Appeal Br. 2. Appeal 2021-001918 Application 15/766,639 2 CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A surface-treated steel material comprising a coating film formed on a surface of a steel material through a base layer containing at least an aluminum-zinc alloy plating layer, the aluminum-zinc alloy plating layer containing Al, Zn, Si, Cr, and Mg as constituent elements thereof, wherein an Mg content is 0.1 to 10% by mass, a Cr content is 0.02 to 1.0% by mass, the aluminum-zinc alloy plating layer contains 0.2 to 15% by volume of an Si-Mg phase, a ratio of a mass of Mg in the Si-Mg phase to a total mass of Mg is 3% or more, the coating film contains a coating film-forming resin (a), a cross-linking agent (b), at least one type of vanadium compound (c) selected from the group consisting of an alkaline earth metal vanadate and magnesium vanadate, and trimagnesium phosphate (d), the vanadium compound (c) is a compound in which an electrical conductivity of 1 % by mass aqueous solution thereof at a temperature of 25°C is 200 μS/cm to 2,000 μS/cm, a content of the vanadium compound (c) is more than 50% by mass and 150% by mass or less relative to 100% by mass of a total of the coating film-forming resin (a) and the cross-linking agent (b), a pH of 1% by mass aqueous solution of the vanadium compound (c) is 6.5 to 11, a content of the trimagnesium phosphate (d) is 3 to 150% by mass relative to 100% by mass of the total of the coating film- forming resin (a) and the cross-linking agent (b), wherein the base layer is chromate-free and, if the base layer further comprises a chemical conversion treatment layer, the chemical conversion treatment layer is chromate-free, and wherein the surface-treated steel material has a cut edge corrosion resistance determined by measuring deterioration widths after performing a salt spray test for 1,000 hours according to a test method specified in JIS K 5400 9.1, the cut Appeal 2021-001918 Application 15/766,639 3 edge corrosion resistance being equal to or more than that achieved by the use of a chromate treatment with hexavalent chromium. Claims Appendix (Appeal Br. 16). REFERENCES The prior art references relied upon by the Examiner are: Name Reference Date Fujii US 2012/0282488 A1 Nov. 8, 2012 Tozaki WO 2015/012290 Al Jan. 29, 2015 REJECTION2 Claims 1-14 are rejected under 35 U.S.C. § 103 in view of Fujii and Tozaki. Final Act. 5. OPINION We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Cf. Ex parte Frye, 2010 WL 889747, *4 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”)). After having considered the evidence presented in this Appeal and each of Appellant’s contentions, we are not persuaded that reversible error has been identified, and we affirm 2 In the Examiner’s Answer, the Examiner withdrew the written description rejection and the indefiniteness rejection. Ans. 4. These rejections are therefore not before us on appeal. Appeal 2021-001918 Application 15/766,639 4 the Examiner’s § 103 rejection for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. Claim 13 The dispositive issue with regard to the obviousness rejection of claim 1 is whether Appellant has carried the evidentiary burden to show unexpected results over the closest prior art. Appeal Br. 10 (“Applicant respectfully submits that the rejection must be withdrawn because evidence of unexpected results exists and has been presented in the Specification.”); see In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997) (holding that a party asserting unexpected results as evidence of nonobviousness has the burden of proving that the results are unexpected). Such a burden requires Appellant to proffer factual evidence that supports unexpected results relative to the closest prior art, see In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991), and that is reasonably commensurate in scope with the protection sought by claim 1 on appeal, In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re Hyson, 453 F.2d 764, 786 (CCPA 1972). In this case, the Examiner finds that the evidence purported to show unexpected results is not commensurate in scope with the claim. Final Act. 8; Ans. 6-9. We agree. For example, the claim requires “an Mg content is 0.1 to 10% by mass, a Cr content is 0.02 to 1.0% by mass” but the inventive examples shown in Tables 1 and 2 are limited to a magnesium content of 2%, 0.5%, and 5% and a chromium content of 0.03%. Spec. Tables 1 & 2 (cited in Appeal Br. 10-11). 3 Appellant does not separately argue for the patentability of claims other than claim 1. See Appeal Br. 10-15. Claims 1-14 stand or fall together. See id.; see also 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2021-001918 Application 15/766,639 5 The Examiner also finds that the inventive examples are not compared to the closest prior art to show unexpected results. Ans. 8-9. We agree. For example, Appellant argues that “Reference Examples 1 and 2 also achieve excellent results in the salt spray test but utilize hexavalent chromium” but does not explain why these examples are the closest prior art or why the use of a chromate treatment with hexavalent chromium is the sole contributing factor to these results. Appeal Br. 13. Moreover, Table 2 shows the aluminum alloy plated steel sheet in Reference Example 2 is free of magnesium and Appellant does not explain why that example is the closest prior art. Spec. Table 2. As the Examiner points out, “the claimed comparison is not to that of an article of the Reference Examples or not to an article that is otherwise the same as that claimed except that it has chromate treatment of the Reference Examples.” Ans. 8. Appellant does not address this finding and no reversible error has been identified. See Reply Br. 4. Appellant instead argues that Fujii is the closest prior art corresponding to “Comparative Examples 8-13 of the Specification [which] show that, when a coating without the claimed vanadates from the claimed coating layer is utilized, the excellent cut end corrosion resistance was not achieved.” Reply Br. 5. The record, however, does not show that these Comparative Examples correspond to the compositions disclosed in Fujji. For example, Fujji discloses a prior art composition in which “[a] Mg content is 0.1% to 10% by weight.” Fujji Abstract. The magnesium content of Comparative Examples 8-13, however, is limited to 2%. Spec. Tables 1 & 2 (cited in Appeal Br. 10-11, 14). Appellant’s argument with regard to Tozaki likewise fails for lack of evidentiary support. Appellant argues that Tozaki corresponds to “Comparative Examples 1 and 2 of the Specification [which] show that, Appeal 2021-001918 Application 15/766,639 6 when the magnesium content of the steel sheet is too high or too low, the excellent cut end corrosion resistance was not achieved.” Appeal Br. 15. Table 7 shows that a salt spray test result of “A” and “C” for Comparative Examples 1 and 2, respectively. Spec. Table 7. Comparative Examples 7 and 8, however, show that both of these examples have a magnesium content of 2% with the same results. Spec. Tables 3, 7. The record before us therefore does not support Appellant’s argument that the magnesium content of Comparative Examples 1 and 2 is the sole contributing factor to the corrosion resistance. In affirming the Examiner’s rejection, we also note that the Examiner makes various findings in support of the rejection which have not been refuted. For example, the Examiner finds that the record does not indicate if the thickness of all the examples is the same which undermines the credibility of any purported unexpected results. Ans. 7. The Examiner likewise finds that Appellant has not carried the evidentiary burden because the record “unclear whether a back surface coating was provided and whether chromate back surface conversion coating was used.” Id. at 6. Because these findings are reasonable and the Appellant has not challenged them, we accept them as facts. See In re Kunzmann, 326 F.2d 424, 425 n.3 (CCPA 1964). CONCLUSION The Examiner’s rejection is affirmed. More specifically, Appeal 2021-001918 Application 15/766,639 7 DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-14 103 Fujji, Tozaki 1-14 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED